INTELLECTUAL PROPERTY & TECHNOLOGY SECTION WEBINAR

ORANGE COUNTY BAR ASSOCIATION

INTELLECTUAL PROPERTY & TECHNOLOGY SECTION WEBINAR

IP Considerations in the Rebranding Process

Tuesday, March 9, 2021

IP Considerations in the Rebranding Process OCBA March 2021

Stacey C. Kalamaras, Esq.

Who Am I?

• Founder and managing partner of Kalamaras Law Office LLC in

Chicago, IL

• Seasoned trademark, copyright, and advertising Attorney

• Big law and in-house experience

• Prior marketing and advertising experience working for consumer-

packaged goods companies

• Managed global trademark portfolios in 150+ countries

• Educated nearly 3,000 attorneys on trademark and IP since 2018

• Founder of Trademarkabilities, a trademark academy for lawyers

AGENDAWhy Companies Change Their Names

How IP/Trademark Factors into Branding

The Washington Redskins Case: A Closer Look

The Rebranding Process for Clients in the Spotlight

Brands Changing Due to Social/Racial Justice Reforms

In Summary

Q&A

Why Companies

Change Names

Why Companies Change Names

Merger or Acquisition

Trademark Infringement Action

Geographic Expansion

Current name outdated or out of

the company’s scope

Business Spin-off

Negative Impression

Cultural/Translation Issues

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Why Companies Change Names

Merger or Acquisition1o BB&T Corp. and SunTrust banks merged and chose the name TRUIST

o Led to big lawsuit with TRULIANT regional bank in NC, SC, and VA

o Resulted in settlement, but I expect there will be lots of confusion

o One of the reasons the merged BB&T/SunTrust entity gave for not changing

their name, once they realized there was a problem, was the fact that they

had spent $125M to date and the regulatory hurdles

Why Companies Change Names

Trademark Infringement Action2o Many examples, from threatened action to litigated

• You can often negotiate a transition period

o IMPOSSIBLE Burger v. INCREDIBLE Burger

• Nestle changed its name in the US to AWESOME Burger, but recently lost the rights in

the EU and announced it will change its name to SENSATIONAL Burger. It plans to

appeal the EU decision

o World Wildlife Fund (WWF) v. World Wrestling Federation (WWF)

• The World Wildlife Fund was founded in 1961 and had an agreement with the now

infamous wresting entertainment company

• The WWE was re-branded in 2002 because it breached its agreement

Why Companies Change Names

Current Name Outdated or Out of Scope3o DELTA Airlines started as a dust-cropping company in the 1920s

• The company was called Huff Daland Dusters

o GOOGLE, one the world’s best known and largest valued brands, was originally

called BackRub

• From a trademark perspective, it was a pretty good name, too, since the search engine

referred to all the backlinks

• Of course GOOGLE is a play on “googol” which means 10100

• Legend has it that the word was mis-spelled

Why Companies Change Names

Geographic Expansion4o One of the best examples of this is the birth of

Panera Bread

o Do you remember The St. Louis Bread Company?

o As Panera was preparing for expansion, it needed a name that better reflected

the fact that it was no longer only based in St. Louis

• The new name could have also been due to the fact that Au Bon Pain purchased the chain

in 1992, but didn’t rebrand it to Panera until 1997

o Contrast that with California Pizza Kitchen, which stayed true to its name even

once its expanded outside of California

Why Companies Change Names

Business Spin-off5o DuPont spins off CORTEVA AgriScience in June 2019

o VF Corporation (Vanity Fair) spins off KONTOOR Brands in May 2019

• KONTOOR owns WRANGLER, LEE, among other clothing brands

o Honeywell spins off RESIDEO Technologies in October 2018

• Smart home products and technologies

Why Companies Change Names

Cultural/Translation Issues6o When adopting marks globally, it’s critical to consider local meaning

• IKEA had a workbench they named FARTFULL, which didn’t do well with the

American audience

• In Swedish, the word Fährt means to travel in a vehicle with wheels

• In China, Kentucky Fried Chicken’s slogan, “Finger Lickin’ Good” translated literally to

“Eat Your Fingers Off” ( Not very appetizing )

• Recently, a Canadian brewery unwittingly apologized for naming its beer HURUHURU,

which in Maori means “pubic hair”

• The Maori are an aboriginal people of New Zealand

• The company publicly announced they would rebrand

Why Companies Change Names

Negative Impression7o ISIS Mobile Wallet

• In 2014, this platform backed by AT&T, T-Mobile and Verizon rebranded

to Softcard due to the negative connotations with the terrorist group

o The Washington Redskins

o Cleveland Indians

o Lady Antebellum

o Uncle Ben’s

o Eskimo Pie

o Land o Lakes

o Aunt Jemima

o Mrs. Butterworth’s

IP/Trademark Factors

into Branding

IP/Trademark Counsel’s Role

You must insert yourself

into the process

Many companies will work

with a branding or naming

company

Trademark Counsel should be

involved early to run searches

If your client is not

working with a branding

agency

IP/Trademark Counsel’s Role

SEARCHING IS CRITICAL

Ask the client how they thought up the name

• Does it mean anything to them?

Where do they intend to sell the goods/services, now and in the

next 3-5 years?

• If there are global expansion plans, do NOT make any public

announcements about the name until the mark is filed in the

U.S. and each of those countries

• Work with local counsel and/or linguistic experts to make sure

the name translates well everywhere

Washington Redskins

Case: A Closer Look

A Brief Case Historyo The trademark battle started in 1992 when Suzan Shown Harjo and 6 other prominent

Native Americans petitioned the USPTO to cancel all the REDSKINS registrations

• The cancellation was based on the fact that the marks were disparaging

o In 1999, the TTAB agreed with Harjo, et. al. and ordered the REDSKINS registrations

be cancelled

o Pro-Football appealed to a District Court in DC

• In 2003, the District Court reversed the on grounds there was not sufficient evidence of disparagement

o Harjo then appeals to the Court of Appeal for the DC Cir

• In 2005, the Appellate Court remands the case without getting into the substance on a procedural issue

o Further appeals were denied by laches and SCOTUS denies cert

A Brief Case Historyo Enter Blackhorse in 2006 and the TTAB process is refiled

• In 2014, the TTAB finds in favor of Blackhorse, finding the term REDSKIN is disparaging

o In Aug 2014, Pro-Football appeals to the District Court of the E.D. VA

• In July 2015, the District Court found in favor of Blackhorse after both parties filed motions for

summary judgment on grounds challenging the constitutionality of the disparagement clause of the

Lanham Act

• The order did not bar Pro-Football from using the marks in commerce

o Pro-Football files an appeal to the 4th Circuit

• Case was stayed at SCOTUS pending the outcome of In re Tam (The Slants)

A Brief Case Historyo Simon Tam comes on the scene and his appeal of the denial of his USPTO application

starts working its way through the court system

• In Sept 2016, his case is granted cert

• The Blackhorse defendants also have an interest in the case

o SCOTUS rules unanimously in June 2017 that the disparagement clause of the

Lanham Act is unconstitutional

• Pro-Football and the REDSKINS are given an unintended win

o In March 2018, after the Tam decision, 4th Circuit vacated the E.D. of VA Court’s Order

of July 2015, and remanded to the TTAB for further proceedings consistent with Tam

o In April 2018, the TTAB vacated and dismissed the case

Dan Snyder’s Positiono Team owner Dan Snyder knew he had an issue with the name

o He had been fighting the name at the TTAB and throughout the Courts

non-stop since 1992

o The Slants use is very different from the REDSKINS

o Snyder famously said “he would never change the name”

o Until the world was upended in the summer of 2020 for racial justice

Summer of 2020

How the Pressure Built Upo Nationwide protests over the murder of George Floyd erupted all over the country in

late May/early June of 2020

o The Redskins play at FedEx Field in Maryland

o FedEx reportedly was trying to end the naming rights contract

• FedEx signed a $205M naming rights contract in 1999

• Rights extended to 2026

• On July 2, WaPo reported FedEx sent a letter to Snyder that it intended to pull out of the contract 6

years early if the Redskins did not change its name

• The letter alleged harm to the FedEx brand and intended to create cause to terminate the

agreement

• The early termination was worth $45M to the team

o Pepsi and Nike followed suit, pulling branded merchandise from their stores

How the Pressure Built Up

How the Pressure Built Upo Team ownership official announced on July 13 it would retire the name

o The problem?... No new name was vetted

• Speculators start filing names at the USPTO

o On July 23, 2020 the team announces it will be called…

WASHINGTON FOOTBALL TEAM for the 2020-2021 season

Intro Washington Football

The Speculatorso Martin McCaulay started filing alternate names for the Redskins in 2014

• He lives in Alexandria, VA and is an actuary

• The 2014 date is important because that’s when the Blackhorse case ended

• He has 25 active registrations and applications pending

• His use-based applications are all for clothing, toys and souvenir type products

• He then started filing ITU applications for Cl. 41 entertainment services in the nature of

football games

• The problem with all of his applications are he filed them all for the express purpose to

sell them to Pro-Football and make a profit

• This is not allowed under the Trademark Act

o A Dallas man, Alexander Muse, has also filed for WARRIORS in Cl. 41 on an

ITU basis

Squatter Filings

Purpose of Trademark Acto The U.S. is not a first to file country

o It is against the purpose and policy of our trademark system to file applications to

“reserve” marks

o Trademark pirating is not allowed

• Applications cannot be filed for the express purpose to try to sell a mark later

o Remember that ITU applications cannot be assigned, except to a successor of the

applicant’s business or a portion of the business to which the mark pertains

• It’s difficult to see how either of these individual’s ITU applications would qualify for a proper

assignment

ITU Applications & Declarationso ITU filings became part of the Lanham Act in 1988

o Your client should always sign the application and acknowledge these statements:

“The signatory believes the applicant is entitled to use the mark in commerce”

“The applicant has a bona fide intention to use the mark in commerce on or in connection with the

goods/services in the application” and

“To the best of the signatory’s knowledge and belief, the facts in the application are accurate.”

o Remember, the application is signed under Section 18 U.S.C. 1001

• Can be fined or imprisoned for up to 5 years for making false statements

Bona Fide Intent is Objective

Here are some

things your client

can and should do

to ensure it has

bona fide intent

prior to filing:

• Document the selection, adoption and use of the mark, including all

trademark searches

• Prepare the business and/or marketing plan, including the financial

forecast for a number of years

• Consider or identify possible purchasers of the products/services

• Plan or create marketing, advertising or promotional materials, including

the website for your product/services

• Consider what raw materials will be needed to manufacture goods

• Produce and preserve product prototypes

• Prepare schematics or instructional manuals

• Plan or create labels, tags, or packaging for your products

• Consider where and how your goods will be manufactured and by whom

• Consider when your goods and services will become available for

purchase

• Purchase liability insurance

• Create a budget for the goods/services involving the mark

Rebranding for Clients

in the Spotlight

What Could the

Redskins Have Done

Conduct thorough full

availability searches.

When the Blackhorse case was pending,

Pro-Football could have started a

rebranding process just in case.

It takes months/years to develop a

name. Branding agencies usually will

go through 100s of names before they

narrow it down to a list of finalists.

The Redskins could have involved their fan base in the process.

Although this creates greater headaches for IP attorneys as we

have UGC issues to contend with, contests, press, and other

creative solutions could have brought the public into the solution.

Carefully consider an

international filing strategy

to ward off interlopers.

How Should the Redskins

Moved ForwardPrepare use behind the scenes

• Get ready to flip the switch 3-5

months before the season

begins

Conduct thorough full availability searches

• Critically important given the value of

merchandise any pro team sells

• The name must be able to be registrable and

recordable with U.S. Customs

• This process along could take months

Carefully consider an international filing strategy

to ward off interlopers

• The NFL is becoming more of an international sport

When it comes times to filing,

consider filing 3 applications to

throw the press off the actual name

• Until such time as the first

applications are examined

• Then unveil the name in a big press

event

Brands Changing Due

to Social/Racial

Justice Reforms

Cleveland Indians: Rebrand

o On Dec 14, the Cleveland Indians

announced it was dropping the Indians name

o It had previously retired the Chief Wahoo

logo in 2019

o The club announced it will keep the name

through the 2021 season

o So far, there are no speculators who have

filed

o The club owns registrations for CLEVELAND

BLUES and CLEVELAND NAPS, both for

clothing and historical nods

The “Lady A” Fight

o In the wake of George Floyd’s death, Lady

Antebellum decided to shorten its name to

LADY A and rely on their 3 prior trademark

registrations filed in 2010

o The problem? There is a 61-year-old blues

singer who has been using the LADY A moniker

at common law for nearly 30 years

o Lady A(ntebellum) could have easily discovered

Anita White aka Lady A had they conducted a

proper search

o The parties tried to reach a settlement, but

discussions broke down

The “Lady A” Fight

o Lady A(ntebellum) filed a declaratory judgment

action in early July.

o The original Lady A filed a countersuit for

trademark infringement on September 15

o The parties are arguing over where the case

will be heard – with the dec action scheduled to

be heard in TN and the countersuit scheduled

to be heard in Seattle

o This likely won’t reach a full resolution (short of

settlement) until 2022

o For an interesting article on the topic see here

Mars: Uncle Ben’s Brand Identity

Mars: Uncle Ben’s Brand Identity

o On June 17, Mars announced it would

review the Uncle Ben’s “visual brand identity”

o On Sept 23, Mars unveiled its new brand

BEN’S ORIGINAL

• We will change our name to Ben’s Original™, as

well as remove the image on our packaging to

create more inclusive branding. This change

signals our ambition to create a more inclusive

future while maintaining our commitment to

producing the world’s best rice.

o Regardless, Retrobrands, LLC filed UNCLE

BEN’S as an ITU application for “instant rice”

on August 12

Nestle: Eskimo Pie

o On June 19, the Dreyer’s division of Nestle

announced the name change and new

packaging

o In comparison to Ben’s Original, how did

they do?

o Do you think they captured the essence of

the brand?

o In the days following this unveiling, Leo

Stoller and Retrobrands filed new

applications for ESKIMO PIE for ice cream

and t-shirts

Quaker: Aunt Jemimao On June 17, Quaker announced the brand

will get a new name and image

o The image has changed over time to remove

the “mammy” kerchief imagery

o On February 9, Quaker announced PEARL

MILLING COMPANY as an homage the

milling company in MN that gave birth to self-

rising pancakes

o AUNT JEMIMA products will be available in

store thru June

o Three speculators all filed for AUNT JEMIMA

back in June for various breakfast foods

including RETROBRANDS

ConAgra: Mrs.Butterworth’s

o On June 18, ConAgra announced it began a

complete packaging and brand review

o According to ConAgra, the imagery of the

brand is to “evoke a loving grandmother”

o No indication that the name will change, but

the bottle shape is iconic and a registered

trademark in use since 1966

o No further announcements on its website

B&G Foods: Cream of Wheat

o Also, on June 18, B&G announced that its

packaging is under review

o B&G is looking at the black chef image

o CREAM OF WHEAT has been registered

since the 1920s

o No new announcements on its website

Land O Lakes: New Packaging

Land O Lakes removed the Native

American woman from their package

In advance of their 100th anniversary

What Happens When

Brands Evolve?

Brands

naturally evolve

and change

over time

• Trademark registrations can be kept alive

• When a logo or stylization is modernized, the older mark can

usually be used somewhere, like on the back of the package or

on a marketing piece

• With some brands, it may not be possible (AUNT JEMIMA may

need to be retired, like the REDSKINS)

• The conversation must be driven by the business

• Legal/IP Counsel should be involved to protect the assets

whenever possible

In Summary

In Summary

There are many reasons companies rebrand

It’s important to have a plan

If you sense your client is in a situation that will involve a rebrand,

get involved

SEARCH, SEARCH, SEARCH

Consider first to file jurisdictions

Be strategic with the implementation and announcement

Trademarkabilities is a trademark academy for U.S. lawyers, paralegals and 3Ls

We have a 10.5 hour CLE-certified course that provides turnkey, comprehensive training on the entire

USPTO trademark application process:

Searching and clearing marks

The Entire Application Process

Responding to Office Actions

Post-Registration Issues

We provide a library of client communications and templates

We offer individualized on-demand training or customized training for your firm for 5 or more professionals

To learn more, please visit our website or contact me

Questions?

Contact Info

Thank You!

Stacey C. Kalamaras, Esq.

Email: [email protected]

Tel: 708-320-2033

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